Last week this blog reported on the latest addition to the copyright collection of the Court of Justice of the European Union (CJEU), this being the decision in Case C-117/13 Technische Universität Darmstadt v Eugen Ulmer KG.In this case the Court ruled that Article 5(3)(n) of the InfoSoc Directive, read in conjunction with Article 5(2)(c) of the same directive,
must be interpreted as allowing Member States to grant – at certain conditions –
publicly accessible libraries the right to digitise the works contained in
their collections.Background

This reference for a preliminary ruling was made in proceedings
between the Technical University of Darmstadt (TU Darmstadt) and publisher Eugen
Ulmer KG (Ulmer).

In 2009 a library of TU Darmstadt scanned a book whose rights
were held by the publisher, Ulmer. The library did so to allow its electronic
consultation from dedicated terminals, where users could also print out on
paper or store on a USB stick – in part or as a whole – the works made
available for consultation there on a one-book-one-user basis. Having
unsuccessfully offered the university the
possibility of purchasing its own ebooks, Ulmer started proceedings for
copyright infringement over unauthorised scanning of that book and other works.

Following
partial victory before the Landgericht of Frankfurt am Main (Frankfurt
District Court), both parties appealed before the Bundesgerichtshof (Germany's Federal Court of Justice). It was
uncertain whether TU Darmstadt could actually rely on the exception pursuant to
Article 52b UrhG, by which Germany had transposed Article 5(3)(n) of the
InfoSoc Directive into its own copyright law and that reads as follows:

"So far as there are no contractual provisions to the
contrary, it shall be permissible to make published works available from the
stocks of publicly accessible libraries, museums or archives, which neither
directly nor indirectly serve economic or commercial purposes, exclusively on
the premises of the relevant institution at terminals dedicated to the purpose
of research and for private study. In principle, reproduction of a work in
excess of the number stocked by the institution shall not be made
simultaneously available at such terminals. Equitable remuneration shall be
paid in consideration of their being made available. The claim may only be
asserted by a collecting society."

The court decided to stay the proceedings and refer the
following questions to the CJEU:

1. Is use subject to purchase or licensing terms within the meaning of Article 5(3)(n) of Directive 2001/29/EC where the rightholder offers to conclude with the estab­lishments referred to therein licensing agreements for the use of works on appropriate terms?

2. Does Article 5(3)(n) of Directive 2001/29/EC entitle the Member States to confer on the establishments the right to digitise the works contained in their collections, if that is necessary in order to make those works available on terminals?

3. May the rights which the Member States lay down pursuant to Article 5(3)(n) of Directive 2001/29/EC go so far as to enable users of the terminals to print out on paper or store on a USB stick the works made available there?

Mere offer is not enough -- acceptance is also needed

The Court's assessment

As regards the first
question, the Court compared the language versions of Article 5(3)(n) and
concluded that the EU legislature used the concept ‘terms’, which refers to
contractual terms actually agreed, not mere contractual offers (as it was
the case of Ulmer). It then recalled the rationale of Article 5(3)(n), which is
to promote the public interest in encouraging
research and private study through the dissemination of knowledge, this being the
core mission of publicly accessible libraries. From these considerations it
follows that the mere act of offering to conclude a licensing agreement does
not rule out the application of Article 5(3)(n).

Turning to the second
question, the CJEU noted that, while the exception in Article 5(3)(n) relates
to Articles 2 and 3 of the directive, this provision limits the use of works to
their ‘communication or making available’. An establishment that gives access
to a work contained in its collection to a ‘public’, namely all of the
individual members of the public using the dedicated terminals installed on its
premises for the purpose of research or private study, communicates that work for
the purposes of Article 3(1). The exception in Article 5(3)(n) would be
meaningless if such an establishment did not also have an ancillary right to
digitise the work in question. Such right would exist under Article 5(2)(c)
the InfoSoc Directive 2001/29, provided that ‘specific acts of reproduction’
are involved. This means that, as a general rule and also in compliance with
the three-step test in Article 5(5) of the same directive, the establishment in
question may not digitise its entire collection.

With regard to the final
question, the Court noted that acts such as the printing out of a work on paper
or its storage on a USB stick are acts of reproduction, not
communication/making available to the public. As such they fall outwith the
scope of Article 5(3)(n) exception. They are not allowed under Article 5(2)(c)
either, as they are not necessary for the purpose of making a certain work
available to the users by dedicated terminals. However, such acts may be
allowed under national legislation transposing the exceptions or limitations
within Article 5(2)(a) or (b) of the InfoSoc Directive. In any case, the
conditions set out in Article 5(5) must be respected.

Kurt is puzzled: how can Article 5(3)(n) exception be effective if a Member State does not also transpose Article 5(2)(c)?

Can you have one and not the other? The fragmented system of EU exceptions

This decision, which largely follows the Opinion[here-- finally available in English] of Advocate General
Jääskinen on 5 June 2014, shows how interdependent
exceptions and limitations in Article 5 of the InfoSoc Directive are.

Yet,
their optional nature allows Member States to determine the actual shape and scope
of any given resulting national exception. In a case like the one at hand, how
effective would a national exception pursuant to Article 5(3)(n) be in a Member
State that did not also provide in its national law for an exception pursuant
to Article 5(2)(c)? Publicly accessible libraries would only have the ‘right’
to communicate/make available digitised works in their collections to the
public, but would lack the pre-requisite to that, ie the ‘right’ to digitise them in the first place.

When there are
exceptions and limitations that are so closely linked that they depend on each
other to be effective, one may wonder indeed whether it makes sense to maintain
a system of exceptions and limitations like that in Article 5 of the InfoSoc
Directive. The list contained in this provision is so fragmented and über-specific
as regards possible permitted uses to be misleading as to the actual importance
of individual exceptions, if considered (and adopted) on their own. Exceptions or rights?

It is also interesting
to note that in this decision the CJEU employed a language which is not really
that of exceptions or limitations (provided that exceptions are actually
different from limitations, as both Advocate General Sharpston and the CJEU
appeared instead to suggest in VG Wort).

The Court spoke in fact of an ‘ancillary right’ to digitise works
that would stem from the exception in Article 5(3)(n).

Whether use of the term ‘right’
together or instead of ‘exceptions’, ‘limitations’, ‘permitted uses’, etc, has
any practical implications remains to be seen.

Yet, it is not excluded that it
may have a bearing in future interpretations of the three-step test pursuant to
Article 5(5).

In this case the Court ruled that the three-step test prevented
the ‘right’ to digitise from being intended as allowing digitisation of the entire
collection of a library, in that this would be against the first step, ie ‘special cases’. However in future
cases the reference to ‘right(s)’ may be used to achieve more relaxed
interpretations of – in particular – the final step of the three-step test,
which mandates upon exceptions and limitations not to cause an unreasonable prejudice
to the legitimate interests of the rightholder. This is because also the
legitimate interests ('rights' as opposed to mere 'exceptions'/'limitations') of users relying should not be unduly compressed.

6 comments:

Malcolm Bain
said...

Dear Eleanor, I would have thought that the limitation of Art. 5.3(n) to dedicated terminals within publically accessible libraries is in itself a sufficient "special case" (wrt three step test) in the context of exploitation of works as a whole. So limiting that exception to only certain works of the library (and not its entire collection) is a special case within a special case - and thus overly restrictive. BRMalcolm

Thanks for your comment. It seems to me that the limitation set by the CJEU might prove controversial to apply in practice: what books is a library allowed to digitise? How many books can it digitise? Etc

Does not the ability of the user - withing the constraint of dedicated terminals - to do whatever the user wants with the content, include making a personal copy and taking that copy with them on a portable memory device, eviscerate the constraint?

I do not understand your questions. If the decision is that the digitisation is allowed on the book in question (as an allowable action in the total digitisation of the work), then what would prompt a different result for ANY book in question, and why would you think that - book by book - some different result in the aggregate would be reached?

There is no super-rights holder for the aggregate collection that speaks to a legal issue of digitising the entire works, is there?

@Anonymous on Monday, 22 September 2014 14:27:00 BST: My concern is that the CJEU has interpreted "specific acts of reproduction" as meaning digitisation is OK but not of one's own entire collection. My question is how national courts will determine when "specific" is too much?

As to the point of "super-rights holder", you are right but take the case of Ulmer: it sued the German library over unauthorised digitisation of the history book *and* other books. Do you think that in this case the national court would say that the library undertook "specific" acts of reproduction or went beyond what is allowed under the relevant exception?

I guess I do not fully understand the translation (I am in the US) of the notion of standing and how one party can even sue on this "and other books" prong.

I read the decision as having force only on the parties involved -and those related issues. If I lack standing, I cannot enforce or even argue on the merits of what I lack standing to.

If I parlay that understanding and the ability to digitise a specific work that is the issue over which the court has jurisdiction to render a decision, then it only follows that the right to digitise is not - and cannot be - fettered or shackled and that since there is indeed a lack of "super-rights holder" or any restriction based on this absence of an entity that would hold such a right, that there can be no such limit under law.

I realize that we may be coming to the same mental state through different paths, and that my path may be stated in more definitive tones. I take the case you mention (Ulmer) and limit the case to what I understand the issue which can be judged to be. If the German library has won the right to digitise one book - any book, then there is no principle to limit which any one book that one book may be, and by pure logic, there can be no limit as to how many other "one book" can then have the right applied to. Since there is no party that has rights overall there can be no challenge to the overall result of the allowed digitise-this-one-book.